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How Can We Protect Fashion Designs With Trademark Law?

Gucci’s shoes, Louis Vuitton’s bag, and Chanel’s clothes . . . no one would deny the fact that the fashion industry continuously invests tremendous amounts of capital to intellectual creativity and marketing. Such investments earn the industry a tremendous amount of money. As brand names and trademarks become more recognized, trademark owners struggle to find strategies to protect their trademarks and designs from appropriators.

Today, trademarks and brand names have become a major international matter. Trademark owners are justly concerned about others appropriating their trademark in light of the substantial monetary investment required to cultivate and promote public awareness. This is the fundamental reason for protecting marks.[1]
In practice, however, it is difficult to regulate trademark appropriation internationally as marks, especially famous marks, are becoming globalized. This situation creates several international organizations and regulations, such as the World Intellectual Property Organization (WIPO)[2] and International Trademark Association – Representing Trademark Owners (INTA),[3] and conventions such as the Paris Convention for the Protection of Industrial Property (Paris Convention),[4] Madrid System for the International Registration of Marks (Madrid System),[5] Trademark Law Treaty, [6]and Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS).[7]

Regarding trademark protection in the fashion industry, many fashion houses are struggling to protect their design that bears their unique character and trademark. Efficiency and effectiveness of these regulations are a significant concern as the fashion industry crosses borders all over the world via the media; e.g., televising fashion shows and celebrities being sighted while wearing a particular brand or designer. Big fashion houses value their brand equity.[8] Most develop a bond with their customers through their brand names and fiercely protect these through registration of trademarks and protection of associated artwork by copyright law.[9] In accordance with the goals of trademark law, the trade dress, which is the overall look of manufacturer’s goods, expands the protection of commercial designs and symbols broadly.[10]

For example, Louis Vuitton uses its trademark, the initials “LV” logo with two distinct coloring patterns, printed on leather women's handbags.[11] It is a prominent example that of a fashion house using its own trademark to create its pattern and product designs. Trade dress “encompasses the design and appearance of the product together with all the elements making up the overall image that serves to identify the product presented to the consumer.”[12] Trade dress consists of the “total image of a good as defined by its overall composition and design, including size, shape, color, texture, and graphics.”[13] It is the image itself, however, that may be represented in or by the written word.[14] To be protected as trademark or trade dress, a mark should acquire “secondary meaning” when “in the minds of the public, the primary significance of a [mark] is to identify the source of the product rather than the product itself.”[15]

However, there is a possible significant limitation on the trademark protection of fashion designs: functionality. The functionality doctrine protects “the integrity of utility patents by prohibiting manufacturers from claiming functional aspects of their products as trademarks” and fosters “competition by allowing competitors to copy even distinctive features that are required to make a product useful, or indeed to make it at all.”[16] Under this doctrine, an ornamental feature is considered as functional and therefore those designs are not eligible for trademark protection.[17]
However, this doctrine has been criticized that it discourages trademark and trade dress to protect fashion design. There are various functionality tests and among them the “aesthetic functionality test"[18] would have been “inappropriate because it provides a disincentive to creators of pleasing designs.”[19] If a feature is an important ingredient in the commercial success of the product, the feature is functional.[20] This poses a conundrum because “in order to satisfy the requirement of secondary meaning a product must have acquired some degree of commercial success.”[21] As mentioned above, a trade dress should be distinctive and acquire secondary meaning. Under the functionality doctrine, every fashion design commercially succeeded will be functional and not be protectable. However, aesthetic functionality alone will not create functionality. While aesthetic functionality is a consideration, the main emphasis in determining functionality is whether the feature is so important that others need to be able to use it so they can compete.[22] Courts should weigh more on the latter and try to protect creative designs as much as they can.

Another possible protection for fashion design is the design registration separate from the trademark regime. While filing an application for a registered industrial design may be the best way to prevent others from using the design, manufacturers of a design do not register their designs commonly, given the short lifespan of the protection. [23]However, for fashion items with a long life span, it is possible to request at the time of filing – not after – that the publication of the application be deferred for up to 30 months.[24] This is a particularly useful feature, offered under the Hague System for the International Registration of Industrial Designs,[25] the European Union community mark,[26] and many national systems, for those who may want to keep their design secret until it comes into the market.[27]
An interesting example of strategic use of a company’s trademark in the fashion industry, is reflected in Pickwick,[28] an Italian casual clothes company. Pickwick originally only had the trademark.[29] The owner of the trademark selected clothes which would appeal to the younger generations and put the trademark on the clothes. Now teenagers perceive the Pickwick logo as trendy and are willing to pay extra for clothes bearing its trademark. The company subcontracts the manufacturing of clothes and it solely focuses on marketing, distribution, and monitoring and controlling the use of the trademark.[30]Business managers need to identify such relevance between design and trademark in a timely manner, determine their business relevance, and agree on those to be protected and leveraged through the Intellectual Property system.[31]

[18] The aesthetic functionality test “identifies product configurations with aesthetically pleasing features and attempts to ensure that they may be monopolized only by design patent.” Christopher J. Kellner, Rethinking the Procedural Treatment of Functionality: Confronting the Inseparability of Useful, Aesthetically Pleasing, and Source-Indetifying Features of Product Designs, 46 EMORY L.J. 913, 935-36 (Spring 1997). However, present status of this test is divided depending on courts. For example, the Sixth Circuit rejected this view that “aesthetically pleasing qualities of a product's configuration may prevent its protection under the trademark law” but, on the other hand, other courts still agree with this view. Id.